PACHOLOK V. HUTMACHER et al. - Page 11



               Interference No. 103,830                                                                                              


               application or patent in which it appears."  The above rule was upheld in Rowe v. Dror, 112 F.3d                      
               473, 479 n.2, 42 USPQ2d 1550, 1554 n.2 (Fed. Cir. 1997).                                                              
                       We are of the opinion that Hutmacher does not support its claim 23 as required by                             
               35 U.S.C. § 112, first paragraph, when read in light of its specification.  At page 15, lines 1 and 2                 
               of its brief, Hutmacher admits that the pursued vehicle of its disclosure is not an element of claim                  
               23.  We agree with this admission because the pursued vehicle is disclosed by Hutmacher as the                        
               disabled device, not a part of the vehicle disabling device.  The only other structure of                             
               Hutmacher’s disclosure that could possibly be the positioning means of the claimed vehicle                            
               disabling device is the ground or driving surface, and/or a support thereon or therein, over which                    
               the pursued vehicle is traveling, and on or in which vehicle disabling apparatus is fixed.                            
               However, none of the above road structure acts to provide the function of “placing the vehicle                        
               disabling device under the pursued vehicle."  The ground or driving surface and any support                           
               associated therewith, are completely static or passive, such that they cannot place anything                          
               anywhere.  We do not regard it reasonable to construe "a positioning means for                                        
               placing . . ." as covering devices which simply hold the vehicle disabling device stationary in the                   
               road.  Putting the disabling device in the road and hoping that the pursued vehicle will itself                       
               come over the top of the device is not the same as placing the disabling device under the pursued                     
               vehicle.  The vehicle may never be positioned over the device.                                                        
                       The public would not be well-served if Hutmacher were granted claim 23 to an invention                        
               he did not make.  Nor would the public be well-served by granting Hutmacher a patent with                             
               claim 23, intended by Hutmache r to define something other than what it truly says in plain                           
               English, and the veiled meaning of which the public could only ascertain by researching the                           
               complex prosecution history of its application.                                                                       
                                                           - 11 -                                                                    



Page:  Previous  3  4  5  6  7  8  9  10  11  12  13  14  15  16  17  Next 

Last modified: November 3, 2007